Overcoming Rejection

You know real pain if you’ve ever been rejected in love or life. This week, a client received a rejection from the United States Patent and Trademark Office for 3 trademark applications. Ouch, that must hurt! Even though rejections are painful, it is pretty common in the trademark realm. Statistics show that 1 in 5 trademark applications receives an initial rejection. Fear not! All is not lost.

Each trademark application is assigned to an examining attorney at the USPTO whose job is to review, analyze and determine if the applied-for mark is entitled to registration. Even after a diligent search by an attorney, there are many reasons why a trademark application can be refused registration. These refusals can be overcome by presenting evidence and arguments in support of registration. Here are examples of some refusals:

 

  • The mark is merely descriptive of the goods or services.

 

A mark is merely descriptive if it describes the goods or services being sold. For example, “Safe Forage” for animal feed and supplements was refused registration on the grounds that it is merely descriptive of the goods. But that refusal was overcome by arguing that it is suggestive i.e. requires, imagination, thought and perception to make the association between the qualities of the goods/services and the mark.  

 

  • The mark is geographically descriptive.

 

A mark is geographically descriptive if it describes the location, origin or source of a product. For example, “Malabar” for rice and rice products was refused registration on the grounds that is geographically descriptive because the Malabar region in India is a major rice growing area. This refusal was overcome by arguing that Malabar is a region and not a specific location specifically known only for rice.

 

  • There is a likelihood of confusion with another pending application or registration.

 

A trademark application may be refused registration if it is same or similar in overall appearance, sound or meaning with an already registered trademark. For example, “Fit in your Genes” for weight loss program was refused registration based on a likelihood of confusion with “Fitgenes” also for weight loss services. This refusal was overcome by arguing that “Fit in your Genes” conveyed a message to consumers to be physically fit (using “fit” as a verb and a play on words) in their jeans. That is different from “Fitgenes” which indicates genetic testing services to convey a different message.

These are only some reasons why the USPTO may refuse registration of a mark. As we’ve seen, just because an applicant receives an initial correspondence refusing registration does not mean that the mark cannot be registered. The USPTO gives applicants ample opportunity to present arguments against such refusals and ultimately allows registration to legally sound, creative and reasonable arguments.

At Nupur Shah Law, we help business owners and creative entrepreneurs with contracts and intellectual property rights. Call us at 646-820- 1366 or email us at nupur@nupurshahlaw.com. I am happy to have a complimentary conversation with you on how to secure and/or defend your rights.

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